All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Monday, August 5, 2013

Takeaway:In an appeal involving
e-learning games, the Board reversed a rejection under 35 USC § 101 of a method
claim directed to constructing e-learning games, where the rejection was based
solely on the grounds that the claims did not satisfy the
machine-or-transformation test. The Board relied on the Federal Circuit's
decision in Cybersource, stating that the Examiner should have
determined if the claim was directed to an unpatentable mental process. The
Board also suggested that claims be analyzed based on the “Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View ofBilski v. Kappos” to determine
whether a claim is patent-eligible under 35 U.S.C. § 101.

The application on appeal was directed to
e-learning games. Two representative claims read:

1. Apparatus for dynamic
construction of e-learning games, said apparatus comprising:at least one learning object assessment object; a repository comprising a plurality of video
scenes; and a game generator for associating
a video scene with an assessment object, dynamically responsive to an answer to
the assessment question by a student, whereinthe video scene is
selected from a plurality of video scenes capable of being associated with the
assessment question.

…

8. A method for
constructing e-learning games dynamically, comprising the acts of:
selecting a learning object from a repository of learning
objects;selecting a learning object
assessment object associated with the learning object from a repository of
learning object assessment objects;testing
an e-learning student according to an assessment question from the learning object
assessment object; andselecting a video
scene from a video repository, responsive to an answer to the question by the
student, for display to the student, whereinthe video scene is selected from a plurality of video scenes capable of being
associated with the assessment question.

The Examiner initially rejected claims 1-12
as being directed to non-statutory subject matter under 35 U.S.C. § 101, but
the Examiner withdrew the rejections of the apparatus claims 1-7 on appeal. As
a result, the only 35 U.S.C. § 101 rejections argued on Appeal were those
directed to the method claims 8-12.

In rejecting claim 8, the Examiner applied only
the machine-or-transformation test to determine whether the claim was directed
to non-statutory subject matter under 35 U.S.C. § 101. The Examiner set forth
the standard as follows:

“[I]n order for a claimed process to be
considered statutory it must be: (1) tied to a particular machine or apparatus,
or (2) transform a particular article into a different state or thing.”

On appeal, the Applicant, paraphrasing the
Supreme Court decision inBilski
v. Kapposwhich had issued a
few weeks previously, argued that the Examiner “failed to produce substantial
evidence that the claim was directed to one of the exceptions to statutory
subject matter.” The Applicant further argued that the claim was tied to a
machine, stating:

“Specifically, claim 8 refers to ‘a repository
of learning objects,’ ‘a repository of object assessment objects,’ and a ‘video
repository.’ All of these items are devices, and thus, the claimed invention is
not directed to one of the exceptions to statutory subject matter.”

The Examiner, ignoring the Applicant’s reference
toBilski, responded by
stating that that “the claim does not make any implicit or explicit recitation
of a particular machine which is critically tied to the performance of the
method.”

Regarding the limitations recited in the claims
of storing objects in a repository, the Examiner dismissed this limitation as
merely being an extra-solution activity, stating that “it is not part of the
critical steps and procedures of the claimed process.”

The Board agreed with the Applicant and reversed
the rejection of claims 8-12 under 35 U.S.C. § 101 for not following the most
recent guidance from the Supreme Court, the Federal Circuit, and the U.S.P.T.O.
The Board stated:

“Following the Federal Circuit’s post-Bilskiapproach inCybersource, the Examiner
should have analyzed the method claim to determine whether ‘it is drawn to an
unpatentable mental process-a subcategory of unpatentable abstract ideas.’ The
Examiner’s analysis, however, is devoid of any mention of an ‘abstract idea’ or
‘mental process.’”

The Board noted that since the Examiner’s
rejection was issued four months prior to the Supreme Court’sBilskidecision, the Examiner’s rejection in
the Final Office Action was not based on the most recent guidance from the
Courts or the Patent Office. The Board stated:

Although the Board reversed the § 101
rejections, the rejections of all of the claims were ultimately affirmed by the
Board, either under 35 U.S.C. §§ 102 or 103.

My two cents:

The Board analyzed the rejections of claims 8-12
under 35 U.S.C. § 101 exactly right. The Examiner provided no analysis of
whether the claims were directed to an abstract idea. In addition, the
Applicant in this case was lucky that the Board was aware of theInterim
Guidanceand directed the
Examiner to follow the Interim Guidance, since most Examiners andPTAB judges are either unaware of the
Guidance or choose to ignore it.

Other panels of judges at the PTAB have
interpreted the Supreme Court’s language inBilskithat “the machine-or-transformation
test is notthe sole testfor determining the patent eligibility
of a process” to mean that, although other tests may exist, the
machine-or-transformation may bethe
sole testapplied by an
Examiner in any given application. This interpretation is inconsistent with the
Supreme Court’s decision, which rejected the Federal Circuit’s application of
only the machine-or-transformation test to reject the claims inBilski, and this interpretation
is definitely inconsistent withCybersource,
in which the Federal Circuit further stated that “the machine-or-transformation
test is not dispositive of the § 101 inquiry.”

The more logical interpretation ofBilskiis set forth in the “Interim
Guidance for Determining Subject Matter Eligibility for Process Claims in View
ofBilski
v. Kappos,” 75 Fed. Reg. 43,922, 43926. In the Interim Guidance, the
machine-or-transformation test isone
testto determine whether a
method claim is directed to patent-eligible subject matter, but notthe sole test. In
addition to the machine-or-transformation test, the Guidance directs Examiners
to determine whether an abstract idea has been practically applied. The
Guidance includes factors that weigh in favor of patent-eligibility of a claim
and factors that weigh against patent-eligibility of a claim.

Here, although the Examiner had access toBilskiat the time of the Examiner’s Answer,
the Examiner did not have access to the Interim Guidance. Examiners do not
generally follow or analyze court cases without guidance from the PTO, and this
Examiner was no exception. When the Applicant relied onBilskito argue that the Examiner had not
provided substantial evidence that the rejected claims were directed to
abstract ideas, the Examiner ignored the argument and instead relied upon the
outdated guidance from the Patent Office that directed Examiners to apply only
the machine-or-transformation test to method claims to determine
patent-eligibility of the claims.

Prosecution Tip:My tip for responding to § 101 rejections in which an Examiner rejects a
method claim using only the machine-or-transformation test is to direct the
Examiner to theInterim
Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos. Applicants should not only cite the location of the Interim Guidance
in the Federal Register, and possibly even provide a hyperlink to the Guidance
on the USPTO website, but Applicants should also point out the specific
features in the rejected claims that weigh in favor of patentability according
to the Interim Guidance. This provides concrete reasons on the record,
supported by case law, why the claims are directed to patent-eligible subject
matter.

7 comments:

Have you actually read the interim guidance the Board cites? The "factors" are nothing more than the machine or transformation test written in as many ways as possible and couched as "factors".

Furthermore the Board's decision on 101 is ironic because the Interim Guidance they tell the examiner to use have since been superseded by amendments to the MPEP in 2012 and further guidance memos and training also issued in 2012.

The latest "guidelines" can be found here http://www.uspto.gov/patents/law/exam/examguide.jsp.

As a general matter, while citing the guidelines is OK, the guidelines are not necessarily an accurate reflection of the law -- more of a USPTO slanted version of what they think the law should be. I would rather cite case law than the guidelines. Case law is binding precedent -- guidelines are not.

However, to the extent that the guidelines really work in your favor, then cite them. However, from experience, their citation value is of limited use since most examiners simply ignore the citation.

Regarding this case, this looks like a situation of an examiner "stretching his legs" and seeing what he can get away with. Another thing, the Examiner wasn't affirmed on all of the 102/103 issues. The Examiner was actually reversed on a couple of the independent claims but the PTAB decided that they were going to step in and help the Examiner out. At least they designated it a new grounds of rejection -- oftentimes, the PTAB will ignore the examiner's analysis, insert their own, and then "affirm" the examiner's rejection.

Another problem with the USPTO subject matter eligibility analysis procedure in MPEP 2106 is that it only sets forth factors. Not only do the factors themselves involve judgment calls, but the MPEP also says without elucidation that not all factors apply to a given invention; that the weight to be accorded a particular factor cn be different for different inventions, and that the presence or absence of any single factor is not determinative. In short, the Examiner can find support in the Guidelines for any position he or she wants to take.

I'd suggest that a better approach might be to catalog for the Examiner each of the Federal Circuit cases that have come down on this issue since Bilski (there haven't been that many), describing the invention in column 1 and the holding in column 2, and showing how the subject invention is clearly closer to the inventions found patentable.

A couple of the comments have suggested citing Federal Circuit cases to the Examiners. I do this on occasion to drive home a point, but my experience has been that Examiners will follow the guidance from the PTO before they follow Federal Circuit cases. That's why I've suggested showing the Examiner the factors from the published Guidance that weigh in favor of patent eligibility.

You point out that for every factor that weighs in favor of patent-eligibility, there are factors that weight against. This is true, but this is the state of 101 jurisprudence. The machine-or-transformation test was a pretty bright line rule, but it was rejected by the Supreme Court as the only test to be applied. As a result, Federal Circuit opinions, PTAB opinions and Examiner decisions are all inconsistent.

I think the best course is generally to point out factors that weigh in favor of patentability from the Guidance, as well as one or two sentences about PTAB or Federal Circuit cases that support your position. Give a reasonable Examiner a well-supported reason to agree with you. I've found that most have withdrawn the 101 rejections when I've followed this course.

Not really, the jurisprudence involves no "factors" and involves only a finding or not, of some judicially exempt subject matter, or preemption thereof.

If you really wish to overcome a 101 rejection that was actually done right, then simply point out why the claim does not preempt the abstract idea (or other judicially excepted subject matter at issue) which the examiner has taken issue with. Do that after having taken a few minutes out of your day to educate him on the law, and remind/ask him whether he is there to apply the law or to apply policy. It really is that simple, and it shouldn't take you more than a few minutes. Unless of course the rejection was properly made and there is in fact some judicially excepted subject matter being preempt. In that case, there is a problem.

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